Iowa State University Research Foundation, Inc. (ISURF) and the Office of Intellectual Property and Technology Transfer (OIPTT) Kenneth Kirkland, Executive Director ISURF and Director, OIPTT

What is ISURF? ISURF is a Not-For-Profit Corporation, founded in 1938 to own and manage intellectual property developed at Iowa State University. ISURF is self-funding and also finances the activities of OIPTT.

What is OIPTT? OIPTT, founded in 1990 provides support services to the university community on matters related to intellectual property, to facilitate the disclosure of new inventions arising from university research, to market these inventions and to license them to industry for commercial development and sale.

Q-What Keeps OIPTT/ISURF Running? A-Invention Disclosures The invention disclosure process is a vital first step on the path to protection and commercialization of University inventions. Our process for evaluating inventions begins with a disclosure (a record of your invention) to OIPTT. A disclosure form can be obtained from OIPTT or downloaded from our web site. We are always available to assist you with this process. Why disclose your inventions? -It will help to ensure that the results of your research will be used and benefits returned to you in the form of royalty income. -It’s University policy. -Extramural sponsors, including agencies of the Federal Government require it.

When Should You Disclose Your Inventions? Before you make a public disclosure When you have an invention you think is novel When you have evidence that it will work If in doubt, disclose. NOTE Greater than 90% of all patents filed are improvements on existing technology. Your invention does not have to be a breakthrough to be of value.

What Do We Do With Your Invention Disclosures? (more detail on our web site) We hold weekly disclosure and marketing meetings. Some key points that we consider during the review - Is the invention reduced to practice? (or just an idea at this stage) -Are there freedom to operate issues? (third party rights, joint inventorship) -Is there any prior art? (patents, publications, presentations) -Do the economics look favorable? (great science is not always commercial) -Is there a market for this technology? -Is filing a patent justified at this time? Obtaining a patent is expensive and time-consuming; both for us and our inventors. A patent is of no use to us if the invention is never commercialized. You as inventors play a key role in this process and we must communicate regularly in order to reach a successful licensing outcome.

How Do We Protect Your Inventions? In the case of inventions to be patented, ISURF hires patent attorneys who have expertise in the field of the invention. ISURF consults with the inventor on the choice of attorney. Prior art issues are reviewed with the patent attorney. A prosecution strategy is determined in consultation with the attorney and the inventor. It is critical that you as inventors update OIPTT/ISURF on activity related to the invention such as planned publications, research projects, new data, consulting, and inquiries from industry. Some inventions such as software may not be patented but rather copyrighted. Other inventions such as plant germplasm are generally treated as proprietary tangible material and can be licensed as such.

Commercializing Your Inventions We are very proactive in seeking out potential licensees. Once a company expresses interest in licensing an invention, negotiations begin. Business and development plans are requested from the company, because it is important for OIPTT/ISURF to understand how the invention will be commercialized. OIPTT/ISURF is the only group at ISU that has the authority to negotiate license and option agreements. A company may want to enter into an option agreement so that it can evaluate the invention prior to committing to a license.

Benefits of Protecting Your Inventions Recognition and income for inventors and the university Contributions to economic development of the state and nation through investment by companies and job creation Placement of graduate students in rewarding jobs Stewardship of technology and fulfilling the obligations of funding sources (e.g., reporting to the federal government, sponsor rights in technology) Formation of relationships between sponsor and inventor/university Consulting arrangements and other opportunities for collaboration

Benefits for Iowa State University, Inventors and Faculty Over the last 10 years, ISURF has contributed a total of $42 million from its earnings to the university. This includes $25million in royalty sharing to ISU inventors and colleges, $2million to ISU inventors for applied research projects to improve the commercial value of their inventions and $6.5million to the office of the Vice President for Research and Economic Development which has been used to recruit and retain key faculty. In FY06-FY08, these funds contributed to a total of 40 start-up and 6 retention packages for faculty. Recently, ISURF has given $9.5M to establish a Research and Economic Opportunities Fund in the VPR Office. Since July 1, 2005 assistance in proposal preparation for SBIR/STTR grants has been provided to 18 existing or potential faculty start-up companies. In addition, ISURF has provided funds for faculty to travel to investor conferences in order to present selected technologies. ISURF has also organized and sponsored five dinners to recognize ISU inventors whose technologies have been commercialized.

Partnering with OSPA: Negotiating Sponsored Research Agreements In FY08, corporations provided $35.2M in funding for research projects at ISU. We have found that in negotiating sponsored research agreements with industry, intellectual property rights are often the most problematic ISURF staff have worked successfully with OSPA to ensure that appropriate IP language is incorporated into these agreements. Generally, the sponsor is granted an option for a limited time to negotiate a license to the IP resulting from the sponsored project. Research grants from government agencies are generally more straightforward, however recent Power Fund grants have raised questions.

Ten-Year Track Record 1196 invention disclosures received 395 technologies licensed 466 patent applications filed 293 patents issued (390 in portfolio) 1931 license and option agreements executed Total license and royalty income $70.9 million (Range $2.1M -$18.1M)

Staffing of ISURF and OIPTT 13 professional staff -Executive Director Kenneth Kirkland -Associate Director Nita Lovejoy -IP Portfolio Manager and In-House Counsel Donna Johns -Technology Licensing Managers Mary Kleis, Eddie Boylston -Three Licensing Associates Dario Valenzuela, Renate Hippen, Julie Minot -SBIR/STTR Program Administrator Kristine Johansen -Contract and Information Specialist Tenann Everly -Disclosure and Database Manager Brian Tiffany -Patent Administration Assistant Peter Gudlewski -Accountant Marc Johnson